dissenting, with whom BALDWIN, Judge, joins.
I respectfully dissent. As stated in the majority opinion, for a publication to constitute an anticipation of an invention, and thus bar the grant of a patent under 35 U.S.C. § 102, it must be capable, when taken in conjunction with the knowledge of those skilled in the art to which it pertains, of placing that invention in the possession of the public. In re LeGrice and In re Brown, cited in the majority opinion.
Applying this rule in In re Samour, 571 F.2d 559, 197 USPQ 1 (Cust. & Pat.App. 1978), this court upheld the PTO’s 35 U.S.C. § 102(b) rejection of chemical composition claims, where: the primary reference named a composition falling within the scope of the claims, and reported that said composition had been previously made and tested; and additional references evidenced that a method of making this composition would have been within the knowledge of one of ordinary skill in the art. The court explained:
Additional references cited in a rejection under 35 USC 102(b) are not relied on for a suggestion or incentive to combine teachings to meet claim limitations (as in a rejection under 35 USC 103), but, rather, to show that the claimed subject matter, every material element of which is disclosed in the primary reference, was in possession of the public. [Emphasis added.]
571 F.2d at 563, 197 USPQ at 4-5.
The Samour case was not the first instance where this court reviewed such a multi-reference anticipation rejection of chemical composition claims. This type of rejection had been before the court in In re Wiggins, 488 F.2d 538, 179 USPQ 421 (1973). There, the primary reference disclosed compositions falling within the scope of the appealed claims, but reported that attempts to synthesize these compounds were unsuccessful. As in Samour, the PTO relied on an additional reference as evidence that a method of making these compositions would have been within the knowledge of one of ordinary skill in the art. However, in Wiggins, the court would not consider this additional evidence, reasoning that the mere naming of compounds by the primary reference did not constitute a description of the invention within the meaning of 35 U.S.C. § 102(b).1
In the case at bar, the claimed compounds, dicarboxylic acid TMBP and dimethyl ester TMBP, are named in the first sentence of the abstract of Nomura. According to this statement, these two compounds along with ten other 4,4'-disubsti-tuted-2,2',6,6'-tetramethyl-biphenyls
(TMBPs) were synthesized and the benzene-induced solvent shifts of their n.m.r. spectra were compared with those of a series of related compounds. However, the article that follows fails to mention either dicarboxylic acid TMBP or dimethyl ester TMBP. And the text of the article casts doubt as to the accuracy of the statement made in the abstract.
According to the statement in the abstract, the twelve TMBPs were compared *128with twelve related compounds. But table 4,2 which sets forth this comparison, does not include any data for dicarboxylic acid TMBP, dimethyl ester TMBP, or their related compounds. Nor for that matter does Table 13 which discloses the n.m.r. spectras of the TMBPs, or Table 3 4 which discloses the n.m.r. spectras of the related compounds with which these TMBP’s were allegedly compared. Furthermore, at the end of the article there is a section which sets forth how the materials used in the study were made. And included are processes for preparing all of the TMBPs listed in the abstract, except dicarboxylic acid TMBP and dimethyl ester TMBP. Lastly, while the claimed TMBPs are listed in the abstract but not discussed in the text, another *129TMBP, dimethyl TMBP is discussed in the text but not listed in the abstract.5
In light of all of these inconsistencies between the abstract and the body of the Nomura article, I conclude that one of ordinary skill in this art would have been uncertain from Nomura as to whether or not dicarboxylic acid TMBP and dimethyl ester TMBP had ever been prepared. Thus, the mention of the claimed compounds in the Nomura abstract amounts to no more than the mere naming of the compound, which under our rationale in Wiggins would be insufficient to constitute a description of the subject compounds.
In In re Sheppard, supra, this court had before it an allegedly anticipatory reference (Emeleus) having an equivocal disclosure with regard to the existence of the claimed chemical composition. Emeleus stated that either phenylsulfur pentafluoride (the claimed composition), or phenylsulfur trifluoride, (a composition falling outside of the claims) had been formed before decomposing. The court in Sheppard held, inter alia:
The uncertainty which pervades the teaching of the reference leads us to conclude that Emeleus cannot properly be held an enabling disclosure.
52 CCPA at 863, 339 F.2d at 241, 144 USPQ at 45.
Here, the uncertainty which pervades Nomura compels the conclusion that Nomura does not contain a definitive recognition that the claimed compounds exist. Therefore, Nomura does not disclose all material elements of the claimed subject matter. Because Nomura is deficient in this regard, it was improper, in my opinion, for the PTO to resort to additional references to show that a method of making the claimed composition would have been within the knowledge of one of ordinary skill in the art.
Accordingly, I would reverse the decision of the board.
The Honorable Morgan Ford, Judge,■ United States Customs Court, sitting by designation.
. The court also faulted the additional evidence for not showing that a method for making the compositions in question was developed prior to the effective date of the primary reference. This requirement, however, that the how-to-make evidence predate the primary reference, was discarded by this court in Samour, wherein it was explained that “[t]he critical issue under 35 USC 102(b) is whether the claimed subject matter was in possession of the public more than one year prior to applicant’s filing date-not whether the evidence showing such possession came before or after the date of the primary reference.” 571 F.2d at 563, 197 USPQ at 4.
. Table 4
. Table 3
. N. m. r. data for dimethyl TMBP is included in Table 1, and a method for preparing this TMBP is set forth at the end of the article.